Types of Trademark Agreements
Trademark License Agreements
A trademark license grants another party the right to use your mark in connection with specified goods or services, subject to defined terms. Trademark licenses must include adequate quality control provisions so that the licensor retains and exercises meaningful control over the nature and quality of the goods or services offered under the mark. Without this, the license may be characterized as a "naked license," which can result in abandonment of the mark and loss of rights.
Trademark Assignment Agreements
A trademark assignment transfers ownership of a mark from one party to another. Assignments arise in business sales, restructurings, and IP portfolio transactions. An assignment that is not accompanied by the goodwill of the business in connection with which the mark was used may be characterized as an "assignment in gross," which renders the assignment void and can destroy the mark's priority and registration.
Coexistence Agreements
A coexistence agreement is a negotiated arrangement between two parties who are using or seeking to register similar marks, defining how each party will use its mark to minimize the risk of consumer confusion. Coexistence agreements are often used to resolve disputes without litigation and can allow both parties to maintain their brands within defined parameters.
Drafting a coexistence agreement requires careful attention to the scope of each party's rights, the geographic and commercial boundaries of use, and the mechanisms for addressing future disputes. A poorly defined coexistence agreement can create more problems than it solves.
Consent Agreements
A consent agreement is a written agreement between a trademark owner and an applicant, in which the owner consents to the applicant's registration of a potentially conflicting mark. Consent agreements are often used to overcome a likelihood of confusion refusal from the USPTO when the owner of the cited mark is willing to acknowledge that the marks can coexist without consumer confusion. The USPTO does not automatically accept every consent agreement (ultimately, it is confusion among consumers that matters), but a well-drafted consent can be highly effective.
Trademark Settlement Agreements
When trademark disputes are resolved through negotiation rather than adjudication, the settlement terms need to be documented in an enforceable agreement. Settlement agreements in trademark matters typically address permitted use, geographic restrictions, obligations to amend or abandon pending applications, and mechanisms for enforcement of the agreed terms.
How Five Dogs Law Handles Trademark Agreements
Jared brings both legal and business analysis to every trademark agreement, with a clear focus on protecting your rights while achieving the commercial outcome you need. Whether you are structuring a license, negotiating with a competitor, or trying to get a registration approved over a cited mark, Five Dogs Law will draft an agreement that is legally sound and practically workable.
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